NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1417, -1462
HEUFT SYSTEMTECHNIK GMBH,
Plaintiff-Cross Appellant,
v.
INDUSTRIAL DYNAMICS CO., LTD.,
Defendant-Appellant,
and
STEVE CALHOUN,
Defendant.
Richard W. Young, Drinker Biddle & Reath LLP, of Chicago, Illinois, argued for
plaintiff-cross appellant. With him on the brief were R. Michael Duffy, David A. Frey and
Carrie A. Beyer. Of counsel on the brief was Jeffrey G. Killian, of Washington, DC. Of
counsel was James S. Blackburn, Arnold & Porter, LLP, of Los Angeles, California.
Joseph R. Re, Knobbe, Martens, Olson & Bear, LLP, of Irvine, California, argued
for defendant-appellant. With him on the brief were Karen Vogel Weil, Steven J.
Nataupsky, Sheila N. Swaroop, Matthew S. Bellinger and Marko R. Zoretic.
Appealed from: United States District Court for the Central District of California
Judge George P. Schiavelli
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1417, -1462
HEUFT SYSTEMTECHNIK GMBH,
Plaintiff-Cross Appellant,
v.
INDUSTRIAL DYNAMICS CO., LTD,
Defendant-Appellant,
and
STEVE CALHOUN,
Defendant.
Appeals from the United States District Court for the Central District of California in case
no. 05-CV-6299, Judge George P. Schiavelli.
__________________________
DECIDED: June 25, 2008
__________________________
Before MICHEL, Chief Circuit Judge, NEWMAN and LINN, Circuit Judges.
LINN, Circuit Judge.
Industrial Dynamics Co., Ltd. (“IDC”) appeals from a final judgment of the United
States District Court for the Central District of California. Heuft Systemtechnik GmbH v.
Indus. Dynamics Co., No. 05-CV-6299 (C.D. Cal. July 6, 2007). The judgment, entered
following a jury trial, adjudged IDC liable for infringement of U.S. Patent No. 6,298,974
(“the ’974 patent”). IDC challenges the district court’s claim construction and the denial
of its motion for judgment of non-infringement as a matter of law. Heuft Systemtechnik
GmbH (“Heuft”) cross-appeals from the final judgment. Heuft challenges the district
court’s exclusion of damages evidence and its refusal to grant a permanent injunction.
We conclude that the district court incorrectly construed the claim terms at issue.
Under the correct constructions, it is undisputed that IDC does not infringe the claims of
the ’974 patent. As a result, we reverse the district court’s denial of IDC’s motion for
judgment of non-infringement as a matter of law and remand with instructions to enter
judgment in favor of IDC. We do not reach the issues raised in Heuft’s cross-appeal.
I. BACKGROUND
Heuft designs, manufactures, and sells equipment used in bottling plants. It
owns numerous patents in this field, including the patents at issue in this case—U.S.
Patent No. 6,155,408 (“the ’408 patent”) and the ’974 patent. Both patents relate
generally to the handling and inspection of bottles (referred to broadly in the patents as
“containers”) for defects and debris, a key feature of which is arranging the bottles in a
way that is stable.
The ’408 patent is directed to a “method and apparatus for rotating rotationally
symmetrical containers such as bottles, while transporting them under backup
pressure.” During prosecution of the ’408 patent, the examiner repeatedly rejected 1 the
claims over PCT Publication WO 83/00135 (“the Christian reference” 2 ). The examiner
eventually allowed the claims, however, after Heuft made various arguments and
1
The prosecution history of the ’408 patent is discussed in detail, infra.
2
The named inventor in this publication is Erik Christian Mernoe. The
examiner initially misidentified the inventor by his middle name, however, and that error
has propagated throughout these proceedings. To avoid confusion, we will continue to
refer to the publication as the Christian reference.
2007-1417, -1462 2
amendments in response to the rejections. The ’974 patent is directed to a “method
and apparatus for inspecting rotating containers.” It is a divisional of the ’408 patent,
and therefore includes an identical specification. The examiner allowed all of the claims
of the ’974 patent without rejection.
In 2005, several years after issuance of these patents, Heuft filed suit against
IDC, alleging that certain bottling apparatuses sold by IDC infringed both the ’408 and
’974 patents. The parties later stipulated to dismissal with prejudice of all claims under
the ’408 patent, thus leaving only the ’974 patent in suit. In October 2006, the district
court construed the two claim terms of the ’974 patent at issue, adopting Heuft’s
proposed constructions for “arranging” in claim 1 and “stabilizing means” in claim 6.
These constructions were based on the plain meanings of those terms. The district
court declined to adopt IDC’s proposed constructions, which were based on alleged
disclaimers of scope during prosecution of the ’408 patent. A jury trial followed. As
relevant to this appeal, during trial the district court granted IDC’s motion to exclude the
damages testimony of Heuft’s expert, on the basis that the fundamental document
underlying that testimony was not reliable. Because the expert’s testimony was Heuft’s
only evidence of damages, the district court took that issue from the jury. The jury
eventually rendered its verdict, finding that IDC infringed the ’974 patent as construed
by the district court.
Following trial, the district court addressed a number of post-trial motions. It
denied IDC’s renewed motion for judgment of non-infringement as a matter of law,
finding substantial evidence to support the jury’s verdict. The district court also denied
Heuft’s request for a permanent injunction, finding that Heuft had failed to show
2007-1417, -1462 3
irreparable harm or that the balance of hardships weighed in its favor. Finally, the
district court declined to award any damages, despite the jury verdict in Heuft’s favor.
The parties timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
A. Standard of Review
Claim construction is a question of law, see Markman v. Westview Instruments,
Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), over
which we exercise plenary review. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1456 (Fed. Cir. 1998) (en banc). Infringement, either literal or under the doctrine of
equivalents, is a question of fact. Miken Composites, L.L.C. v. Wilson Sporting Goods
Co., 515 F.3d 1331, 1336 (Fed. Cir. 2008).
The grant or denial of a motion for judgment as a matter of law is reviewed under
the law of the regional circuit. Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil
Co., 425 F.3d 1366, 1372 (Fed. Cir. 2005). In the Ninth Circuit, the grant or denial of a
motion for judgment as a matter of law is reviewed de novo. Pavao v. Pagay, 307 F.3d
915, 918 (9th Cir. 2002). Judgment as a matter of law “is proper if the evidence,
construed in the light most favorable to the nonmoving party, permits only one
reasonable conclusion, and that conclusion is contrary to the jury’s verdict.” Id. “[W]hen
reviewing a motion for judgment as a matter of law, we apply the law as it should be,
rather than the law as it was read to the jury.” Fisher v. City of San Jose, 509 F.3d 952,
957 (9th Cir. 2007) (quoting Pincay v. Andrews, 238 F.3d 1106, 1109 n.4 (9th Cir.
2001)).
2007-1417, -1462 4
B. Analysis
Infringement of the ’974 patent is dependent upon the interpretation of two claim
terms relating to the arrangement of containers in a way that maintains stability. We
first address construction of these claim terms. We then assess the impact of those
constructions on infringement.
1. Claim Construction
Claim 1 of the ’974 patent recites “rotating the containers continuously alternately
in opposite directions by arranging one of two consecutive containers stable against one
of the at least two railings and the other stable against the other of the at least two
railings.” Claim 6 recites a “stabilizing means for the stable arrangement of one of two
consecutive containers.” The district court construed “arranging” in claim 1 as “putting
into a proper order or into a correct or suitable sequence, relationship or adjustment.”
Heuft Systemtechnik GmbH v. Indus. Dynamics Co., No. 05-CV-6299, slip op. at 2 (C.D.
Cal. Oct. 6, 2006). It construed “stabilizing means” in claim 6 as “narrowing the
distance between the guiderails at an angle sufficient to interrupt the chaotic behavior of
the bottles.” Id. IDC argues that the claims of the ’974 patent cannot be construed to
encompass stably arranging containers using exit angles less than 30°, because such
angles were disclaimed during prosecution of the related ’408 patent. Heuft counters
that the claim terms were correctly construed, contending that the prosecution history of
the ’974 patent is silent as to the measure of the exit angle, and that any disclaimer that
may have arisen during prosecution of the ’408 patent does not apply to the claims of
the ’974 patent.
2007-1417, -1462 5
Prosecution disclaimer occurs when a patentee, either through argument or
amendment, surrenders claim scope during the course of prosecution. Elbex Video,
Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). Amendments
or arguments that are merely vague, ambiguous, or subject to other reasonable
interpretation are not sufficient to surrender claim scope. Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003). Rather, in order for prosecution disclaimer
to attach, the patentee’s actions must be “clear and unmistakable.” Id. at 1326.
We agree with IDC that in the ’408 patent, Heuft disclaimed “arranging . . .
containers . . . stable” or “means for the stable arrangement of . . . containers” using
angles less than 30°. This is because its actions during prosecution were clear and
unmistakable. From the outset of prosecution of the ’408 patent application, the
examiner rejected all pending claims over the Christian reference under 35 U.S.C.
§§ 102 and 103. Heuft, in response, made amendments to the claims and argued, inter
alia, that “the present invention provides for the increase and sharp decrease at an
angle β of the distance between the railings creating the stable arrangement. This
stable arrangement stops the propagation of any disturbances downstream. As noted
above, Christian does not disclose any means for such stable arrangement.” J.A. at
5078. When Heuft made this argument, no independent claim contained a limitation
relating to the exit angle of the railings.
The examiner continued to reject the claims under the Christian reference,
countering that “Christian’s guides . . . provide stable arrangement . . . .” Id. at 5089.
Heuft subsequently amended the independent claims to expressly recite an exit angle of
30° to 100°. E.g., id. at 5092 (amending claim to recite “arranging one of two
2007-1417, -1462 6
consecutive containers stable against one of the at least two railings and the other
container stable against the other railing in the direction of conveyance after the first
area by reducing the distance between said at least two railings at an angle β of the
lateral railings to each other of about 30° to 100° to about somewhat more than the
diameter of the containers” (amendment emphasized)). This amendment tracked
language in the specification relating to the only embodiment directed to angled
guiderails. See ’408 patent, col. 2, ll. 12-18 (“[T]he distance between the two railings in
the direction of conveyance is to begin with gradually broadened [sic] to about 1.5 times
the diameter of the containers and then narrowed down at an angle of the two railings to
each other of about 30 to 100°, preferably 50 to 80°, to somewhat more than the
diameter of the containers.”). Accompanying this amendment, Heuft again argued that
the relatively large exit angle of its invention distinguished it from Christian: “In an area
following the first area, he [sic] angle β[3] of the present invention also produces a more
marked change than the gradual reduction in the space between the rails as seen in
Christian. Christian does not suggest that there are the given advantages provided by
angle β in the area following the first area.” J.A. at 5094.
In a final office action, the examiner continued to reject the claims over the
Christian reference, observing that “[i]t is obvious that following the first area, there
would be a second area wherein Christian’s railings will be about 1.5 times the diameter
of the containers as the distance between the railings is reducing to somewhat wider
than the diameter of a single container. Such tapered configuration of the railings would
3
As noted above, Heuft defined the angle β in the amendments to the
claims as “about 30° to 100°.”
2007-1417, -1462 7
obviously result in a tapered angle within 30° to 100° or 50° to 80°.” Id. at 5114. Heuft
filed a continued prosecution application, in which it added several new claims and
made amendments to the existing ones, relating primarily to the geometry of the
guiderails. Heuft also attempted to amend the specification. One such attempted
amendment indicated that the “[t]he critical features [of the invention] are the distance
between the railings 14 and above all the angle β at which that distance narrows down
in the third area 28.” Id. at 5144 (emphasis added). Once again, Heuft argued that the
relatively large angle recited in the claims distinguished the invention over Christian.
The examiner did not allow the amended specification, however, because it was not
accompanied by a statement indicating that the amendment did not add new matter.
The examiner did, however, stop applying the Christian reference after Heuft’s
amendments to the claims, presumably because the added limitations persuaded the
examiner that the claims were patentably distinct. Following argument and
amendments to the claims to address the examiner’s remaining rejection under 35
U.S.C. § 112 ¶ 1, the examiner allowed the claims to issue.
Thus, throughout the course of prosecution of the ’408 patent, Heuft not only
repeatedly distinguished its claims over the Christian reference on the basis of the large
exit angle’s ability to stably arrange the containers, it also amended all of those claims
to require an exit angle between 30° to 100°, a span which directly tracks the only
discussion in the specification indicating an appropriate range for stably arranging
containers. Under these circumstances, we have little difficultly concluding that Heuft
clearly and unmistakably disclaimed exit angles less than 30°, at least with respect to
2007-1417, -1462 8
the ’408 patent. The salient question is whether this disclaimer flows to the related ’974
patent.
It is well-settled that “prosecution disclaimer may arise from disavowals made
during the prosecution of ancestor patent applications.” Ormco Corp. v. Align Tech.,
Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (quoting Omega Eng’g, Inc. v. Raytek Corp.,
334 F.3d 1314, 1333 (Fed. Cir. 2003)). “When the application of prosecution disclaimer
involves statements from prosecution of a familial patent relating to the same subject
matter as the claim language at issue in the patent being construed, those statements in
the familial application are relevant in construing the claims at issue.” Id. Thus, the
issue is whether the disclaiming statements Heuft made with respect to the ’408 patent
related to the same subject matter that is at issue in the ’974 patent.
The charts below display (with relevant language emphasized) the claim
language at issue in the ’408 patent application when the disavowing statements were
first made (following Heuft’s first amendment to the claims), see J.A. at 5073-74, the
claim language as it appears in the issued ’408 patent, and, finally, the corresponding
language in the claims of the ’974 patent. The first chart shows a comparison for the
“arranging . . . containers . . . stable” limitation:
2007-1417, -1462 9
’408 application ’408 patent (as issued) ’974 patent (as issued)
(1st amendment)
1.d. arranging one of two 1.c. arranging one of two 1.e. rotating the containers
consecutive containers consecutive containers continuously alternately in
stable against one of the at stable against one of the at opposite directions by
least two railings and the least two railings and the arranging one of two
other container stable other stable against the consecutive containers
against the other railing in other of the at least two stable against one of the at
the direction of railings in the direction of least two railings and the
conveyance after the first conveyance after the first other stable against the
area. area by reducing the other of the at least two
distance between said at railings in the direction of
least two railings at an conveyance after the first
angle β of the lateral area;
railings to each other of
about 30° to 100° to about
somewhat more than the
diameter of the containers
and arranging the at least
two railings substantially
symmetrical to the midline
of the conveying surface;
thereby rotating said
containers.
The second chart shows a like comparison for the “means for the stable arrangement of
. . . containers” limitation:
2007-1417, -1462 10
’408 application ’408 patent (as issued) ’974 patent (as issued)
(1st amendment)
2.d. means for the stable 2.d. means for the stable 6.e. stabilizing means for
arrangement of one of at arrangement of one of two the stable arrangement of
least two consecutive consecutive containers at one of two consecutive
containers at one railing one of the at least two containers at one of the at
and of the other container railings and of the other least two railings and of
at the other railing, the container at the other of the other container at the
means following the first the at least two railings, other of the at least two
area. the stable arrangement railings the stabilizing
means following the first means being disposed in
area in the direction of the direction of
conveyance and conveyance after the first
comprising said distance area.
between said at least two
railings substantially
symmetrically reducing at
an angle β of said at least
two railings to each other
of about 30° to 100° to
about somewhat more
than the diameter of the
containers and arranging
said at least two railings
substantially symmetrical
to the midline of the
conveying surface.
As illustrated by these charts, the statements Heuft made during prosecution of
the ’408 patent related to the same subject matter that is at issue in the relevant claim
limitations of the ’974 patent—namely, “arranging . . . containers . . . stable” and “means
for the stable arrangement of . . . containers.” Consequently, the arguments and
amendments Heuft made during prosecution of the ’408 patent also operate to disclaim
exit angles less than 30° in the claims of the ’974 patent.
2007-1417, -1462 11
2. Infringement
Following trial, IDC renewed its motion for judgment of non-infringement as a
matter of law. It argued that the record lacked substantial evidence to support the jury’s
verdict of infringement, under either the district court’s constructions of the claim terms
or under constructions wherein exit angles less than 30° were disclaimed. The district
court denied IDC’s motion. IDC contends that it is entitled to judgment of non-
infringement as a matter of law if we find that Heuft has disclaimed exit angles less than
30°, because the undisputed evidence at trial showed that the accused infringing
products have exit angles of either 12° or 14°. Heuft does not confront IDC’s position
head on, responding only that:
Adoption of a different claim construction would necessitate a new trial as
Heuft presented its entire case based on the claim construction adopted
by the district court. In particular, as a result of the district court’s claim
construction, Heuft did not present any evidence of infringement by
equivalent structure under 35 U.S.C. § 112 ¶ 6 and agreed to remove
language regarding infringement by equivalent structure under 35 U.S.C.
§ 112 ¶ 6 from the final jury instructions.
Cross-Appellant’s Br. at 33 n.4 (citations omitted). Heuft does not dispute that IDC’s
accused products have exit angles of 12° and 14°—substantially less than 30°—only
that, if remanded on IDC’s proffered claim construction, it should be able to assert that
IDC’s products infringe claim 6 as structural equivalents under § 112 ¶ 6.
Heuft’s argument misunderstands the concept of disclaimer. Disclaimer operates
to prevent a patentee from capturing subject matter disavowed during prosecution, and
applies with equal force to means-plus-function claims. See Ballard Med. Prods. v.
Allegiance Healthcare Corp., 268 F.3d 1352, 1359 (Fed. Cir. 2001) (“When a patentee
advises the examiner (and the public after patent issuance) that a particular structure is
not within his invention, the patentee is not permitted to assert in a subsequent
2007-1417, -1462 12
infringement action that the same structure is equivalent to the structure described in
the patentee’s specification for purposes of section 112 paragraph 6.”); see also Omega
Eng’g, 334 F.3d at 1325 (discussing Ballard Med. Prods.). Thus, when Heuft broadly
disclaimed exit angles less than 30° during prosecution, it foreclosed the possibility that
it could later attempt to assert that a 12° or 14° exit angle is structurally equivalent to an
exit angle that, due to the disclaimer, must be 30° or more. Consequently, because it is
undisputed that the exit angles of IDC’s accused products are substantially less than
30°, “the evidence . . . permits only one reasonable conclusion, and that conclusion is
contrary to the jury’s verdict.” Pavao, 307 F.3d at 918. Accordingly, IDC is entitled to
judgment of non-infringement as a matter of law.
III. CONCLUSION
For the foregoing reasons, we reverse the district court’s denial of IDC’s motion
for judgment of non-infringement as a matter of law and remand with instructions to
enter judgment in favor of IDC.
2007-1417, -1462 13